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By J.D. Houvener
Patent Attorney and Founder

Hi my name is JB hoof owner and I’m your host of the bolt today’s show or you the inventor entrepreneur or business owner get your daily inspiration to help you make the world a better place [Music]

we’re here talking about step 10 today there’s quite a few steps I know but hang in there with me we’re almost there on how to get a patent granted for your invention now we’ve already filed your application we’ve talked about international applications and all the the stuff that needs to be thought of just before filing now we’ve already filed ok what happens next that’s office actions office actions what does that mean well that’s any type of response that we get from the USPTO when your application gets submitted to the Patent Office there’s a process that it’ll get assigned to a specific arty in it and more particularly one u.s. examiner yeah it’s true your application is is really sent on to the desk of an actual human being that works at the Patent Office in Alexandria Virginia ok the truth is that those many patent agents and examiner’s there at the office do work virtually so they may have a house and Denver or Miami and that’s what they’re doing the work but it’s part of the Patent Office and they work so when it gets assigned to that examiner they’re gonna do their diligence – ok so they’re it’s their turn to do an examination a research and to give you an advisory position on what they if they think your application is novel non-obvious and has utility or if they see something wrong maybe they reject some or all of the claims our object to the procedure that you’ve done in filing the application those are two big issues that can come up they can the the main reasons the substantive issues there’s hundreds of reasons why they might reject her object at the high level examiner’s might find a piece of prior art that we didn’t find it’s possible it happens they may also see a piece of prior art that we found but they might look at a little differently than we did and so what happens is they’ll they’ll send a rejection back to you the inventor and as your advocate and your attorney it’s our job to then provide you recommendation on how we might need to come back with legal argument or amending the claims of the patent application it could certainly involve amending the specification that’s the written description or the drawings or adding to it right there’s lots of different options here but know that it does require work on our end and we’re going to need to make sure that we compensate the attorneys for that work so there will be either hourly or flat fee billables for that work but just know that we’re in your corner we’re always going to make sure we’ve worked with you to go to help you understand how aggressively or how passively you want to be in this office action response so if you for example want to be quite aggressive and want to make sure that you get as most rights as possible you’re gonna want to do just legal argument and not amending your claims when you make amendments to claims and make your scope a little bit narrower to get around have rejection and office action in essence you’re reducing the value of your patent rights so if you wanted to be aggressive you’d want to avoid doing that and you would just provide legal argument we would help you think about ways you can argue and strategize about getting around that examiner if you’re looking to be a little more cost conscious and not expect another rejection you may want to just simply concede to what the examiner is saying do an interview and say okay I get it mr. examiner mrs. examiner hi I will make some amendments and we will limit the scope to make sure we don’t tread on this prior art in that case we’ll simply address the office action and get it issued right away I know I cover a lot today about office actions if you have more information that you need to know please go to our website it’s bold pad is calm and go to the office actions tab you’re gonna see a ton of information some examples and a way to get ahold of us to set up your free consultation today I’m your host JD who Vener of the bull today’s show go big go bold

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at